Closing the loop of subject matter conflicts of interest in patent prosecution

This article series is focusing on subject matter conflict of interest issues are a significant concern for attorneys. Patent practitioners have an additional layer of concern with respect to subject matter conflicts of interest. This type of additional conflict search is not related to the inventors, assignee or research team, but is directly related to the patent application disclosure.

The first article introduced the topic and discussed generally why it is an important consideration. The second article reviewed in depth a recent case brought by a former client against a firm that involved this type of conflict, how it developed and the complications that exist in this area of conflicts. The next two articles followed by discussing how to work the problem from both the law firm side and the inside counsel side. The last article described practical steps to train your team, and by “your team”, we are referring to both your company’s team (legal, technology, sales, management) and your outside legal team. This final article will outline a practical timeline for inside counsel to use when considering competitors, potential competitors and subject matter conflicts of interest.

If reviewing subject matter conflicts of interest is new to your or your company, there are several steps you can take to make this new process more efficient and streamlined. First, you need to build a list of competitors and interested parties in your company’s technology area. The best way to do this is identify one or two technology leaders at your company and develop the basic list. This first list may be 1-2 companies or 10-20 companies. If you have already sent a list of competitors to your outside counsel, you should calendar to review it with them every six months to ensure that you have provided any new information to them and to ensure that the outside firm understands how important this issue is to your company.

Second, organize a first basic training for key members of your company, including management, sales and technology/product development. The training should focus on the basics of subject matter conflicts, why it is important to monitor them and then move into a brainstorming session regarding your competitor list. You should provide your initial list and give the group 10-20 minutes to provide additional competitors and potential competitors, and this is the perfect time to do it, because you have laid out why identification of competitors is important. Finally, provide them with a takeaway form that they can give to their group members, so that if any competitors were missed, you can capture that information. Once you finalize that list, provide it to your outside counsel and ask them to a) run conflicts on the list, and b) add the companies and names on that list to their conflict system as “related parties” or “adverse parties” to your matters.

The next step is to set up google alerts (or a similar search spider) on that list you just developed. As mentioned in an earlier article, a list of companies and individuals allows you to set up intellectual property and technology watches that alert you when they file trademarks, patent applications and put out press releases. However, it is important to move quickly under the patent post-grant opposition procedure, because you have to make a decision to pursue, gather the information you will need and file the petition within a few months of allowance. Developing an alert system allows you to monitor this group easily and on a regular basis.

The next step is to develop a system for organizing triggering events, such as trade shows, scientific meetings and other public presentations. This list can also include employees who have left the company. This system may be a simple as a spreadsheet or may be as complicated as a docket system, where each event can have a set of reminders and notes added. This system has a lot of advantages, but with respect to subject matter conflicts, it lets your team review with the presenter in advance or right after the event to review whether they saw anything or spoke with anyone who could be a potential competitor or interested party. With respect to employees who have left the company, your company wants to track them to ensure they aren’t setting up competing businesses or possibly utilizing trade secrets or proprietary information in their new venture. The regular review of this information will start to develop a culture of intellectual property consideration at your company.

Finally, you want to identify someone in your team to stay on top of this information, keep it organized and provide updates at regular meetings. As inside counsel and company managers, you have a lot of things on your schedule, so the suggestion that you take on this additional work may be unreasonable. However, the goal with this series was to provide a foundation for the idea that these conflicts are important to your company’s bottom line, provide questions and talking points you can use when you discuss these conflicts with your outside counsel, and provide information for your company on how to set up internal systems, so that this process is streamlined and becomes a part of your company’s general procedure.

Contributing Author

Sandra P. Thompson

Sandra P. Thompson, J.D., Ph.D., is a Shareholder in the Orange County office of Buchalter Nemer. Her practice focuses on intellectual property, specifically, patents and...